by Mike Oliver | Jun 4, 2013 | Intellectual Property, Trademarks, Uncategorized
Trademark Symbols – The Difference Between the ™ and ® Symbols and When Is A Trademark Owner Permitted Use of The Symbols
A common question among trademark owners is what’s the difference between the ™ symbol and the ® symbol and when can I use them on my trademarks. It is also a common misconception that you have to obtain a federal trademark registration on your trademark before you can use the ™ symbol. That is not the case.
You may use the ™ symbol on a trademark even though the trademark is not registered (or even applied for). Thus, whether you have a trademark application pending at the United States Patent and Trademark Office, but it has not reached registration yet, or you have yet to file a trademark application, you may use the ™ symbol on your trademark. The ™ symbol is notice to others that you are using a word, phrase or logo as a trademark. It also potentially wards off third parties from using the same or similar mark. Thus, once you begin using a trademark on a good or service you are providing, you may use the ™ symbol on the mark (or the ℠ symbol if you prefer to distinguish a service mark although ™ may be used on trademarks used in connection with goods or services). Note – although this is a whole new topic for another article, you should make sure that another party is not already using the same or similar trademark in the same, similar or related area before you begin using the trademark.
As for the ® symbol, you may use that once the U.S. Patent and Trademark office issues a registration for your trademark. You should not to use the ® symbol on your trademark prior to obtaining a federal registration – such use is considered a misrepresentation to the public that you have a federally registered mark. Upon registration, you may (and should) use the ® symbol on the trademark.
This ® symbol provides notice to others that you have a federal registration. It is important to note that the failure to include the ® symbol can potentially result in a limitation in damages that you would have been entitled to in a trademark infringement action as your damages could potentially run later. Thus, it is beneficial to include the ® registration symbol once the U.S. Patent & Trademark Office issues the registration to you.
For additional information, please contact Kim Grimsley at kim@olivergrimsley.com.
by Kim Grimsley | May 3, 2013 | Intellectual Property, International, Trademarks, Uncategorized
More Countries Join the Madrid Protocol – Next Up: India
Effective July 8, 2013, India will join the Madrid Protocol – the international registration trademark system. This is on the heels of Colombia, Mexico, New Zealand and Philippines, which have all joined the Madrid Protocol within the past 12 months.
The Madrid Protocol is one of the two treatises of the Madrid System (or the International Trademark System), which allows a trademark owner to seek international registration with one filing. Businesses are growing worldwide today and as such, more and more businesses are finding they need international protection. Under the Madrid Protocol, international registration is a more simplistic and cost-effective means of providing trademark owners with the ability to obtain trademark protection in up to 90 designated countries with only one trademark application filing. Registration under the Madrid Protocol is beneficial from a management standpoint as well as the international trademark registration can be managed more easily since only one step will serve to record any changes in the trademark registration, such as a change in ownership or even the address of the owner.
Thus, if your company wants to obtain trademark protection in fifteen15 countries, rather than having to file, pay for and manage 15 trademark filings in various countries, a trademark owner can obtain trademark protection in 15 countries with simply one application filing. Not only is this cost effective in filing fees, but also it is also cost-effective in the time spent in preparing and filing the trademark application. Although filing under Madrid Protocol is beneficial to all trademark owners no matter how small or large the company may be, smaller businesses that once thought international trademark protection was just not feasible from a cost perspective can now realistically move toward international trademark registration and protection on a global basis under the Madrid Protocol.
For more information, please contact Kim Grimsley at kim@olivergrimsley.com.
by Mike Oliver | May 1, 2013 | Intellectual Property, LegalEase, Trademarks, Uncategorized
Low barriers to entry in certain businesses breed rapid response and quick-to-market products that capitalize on “in the moment” mania. Often the in-the-moment-mania products derive from long standing famous trademarks owned by aggressive trademark enforcers. Buyers should be beware of these types of aggressive trademark enforcers prior to making costly investments.
Here is a hint. The National Football League is one of them.
An enterprising sports fan who almost a year ago saw an investment opportunity in the term “HarBowl” recently got more than he bargained for when the NFL’s lawyers came knocking.
The term “HarBowl” emerged into popular sports conversation around Thanksgiving of 2011, when brothers John and Jim Harbaugh became the first siblings in NFL history to lead their teams against one another as head coaches. The first “HarBowl” was a media frenzy of a family affair staged on national television during one of the country’s favorite family meals. Older brother John’s Baltimore Ravens won the inaugural “HarBowl”, yet Indiana resident Roy Fox remained interested in the term even after the final whistle had blown.
The two teams would go on to have very successful seasons before each fell a game short of meeting once again in the only scenario possible that year; the Super Bowl. Despite the super rematch of the “HarBowl” not coming to fruition, Fox liked his chances of the possibility enough to invest in filing for a trademark in hopes of eventually profiting from the phrase.
He filed trademarks for “Harbowl” and “Harbaugh Bowl” on February 21, 2012. The marks, filed as intent-to-use, were allowed and published for opposition.
The NFL contacted Fox in August of 2012 stating concern that his recent trademarks could easily be confused with the NFL’s trademark of the term “Super Bowl.” It was reported the NFL encouraged Fox to abandon the marks shortly thereafter, which he did.
According to ESPN, the league refused to provide Fox with any remedy for his investment in the marks when he asked the league to reimburse him for his costs to file for the trademarks. He was also reported to have requested several other simple consolations such as season tickets and an autographed photo of league commissioner Roger Goodell.
Fox reported that instead of honoring his requests, the NFL chose to aggressively shift direction with its efforts and suggested that not only would the league oppose his filings, but they would also seek to have him pay its legal bills. Fox would eventually fold his hand. At least three more similar marks have been filed over the past month. They will likely meet the same fate.
The legal issue is not that Fox necessarily had a losing hand. The issue is that the NFL holds a lot more chips.
Many would argue that the NFL’s claim is not a legally strong one. “HarBowl” is certainly no less confusing to Super Bowl than other trademarked phrases such as “Sugar Bowl” and “Lingerie Bowl” which are also used to describe football games.
In reality, “HarBowl” is probably no less confusing than “cereal bowl” or “toilet bowl.”
Legal professionals who have publicly commented on the case have noted that the odds of a jury agreeing that the two phrases are confusingly similar are relatively poor. However, mere likelihood of confusion is only one aspect of the legal issues – Super Bowl is unquestionably a world famous trademark. Famous trademarks enjoy a much wider berth – even non confusing but tarnishing or blurring acts can dilute a famous trademark.
The NFL basically smoked Fox out of the hole by signaling their intention to be aggressive in pursuit to stop him. The NFL is an organization with essentially unlimited financial resources. Mr. Fox presumably does not have the type of financial capabilities as a multibillion dollar company. As a result, the question became – are the trademarks financially worthwhile to combat a lawsuit that could potentially cost six figures? Fox made the reasonable decision that no amount of revenue the trademarks could yield would justify that investment.
The moral of the story is an important message for anyone who considers pursuing a low barrier to entry business that expects to profit from the fame or notoriety of someone else or someone else’s trademarks, particularly famous trademarks. Legal review and anticipation of probable legal action is part of the going-into-business decision process. At the end of the day, legal costs in high risk activities should be considered as possibly significant line items on a budget just like any other expense. If the potential return of the expense is not equitable to the potential cost, it may not be a wise investment of resources.
For Fox, a few thousand dollars in filing costs for trademarks may have been worth the prospect of making some money off of clothing sales should the Harbaugh brothers inevitably meet in the Super Bowl. However, the cost of defending those trademarks against a force such as the NFL was not worth the legal bills.
For more information on trademark law, contact Mike Oliver or Kimberly Grimsley.
by Mike Oliver | May 1, 2013 | Intellectual Property, Litigation, Trademarks, Uncategorized
A question often arises – does an owner of an intellectual property right have the duty to enforce it? While the answer is no, the failure to do so in the face of known infringement can damage and limit the ability to enforce the right in the future. This legal doctrine – laches – borrows from the statute of limitations – which prevents a claim from being filed if the event giving rise to the claim occurred a distance in the past. This doctrine applies differently in each area of intellectual property, but is most critical, and hardest to determine, in trademark cases.
In trademark cases, the elements in the 4th Circuit (and most circuits) are as follows: “In determining whether laches operates as a defense to a trademark infringement claim, we consider at least the following factors: (1) whether the owner of the mark knew of the infringing use; (2) whether the owner’s delay in challenging the infringement of the mark was inexcusable or unreasonable; and (3) whether the infringing user has been unduly prejudiced by the owner’s delay.” Ray Communications v. Clear Channel, 4th Cir Ct (March 8, 2012).
“[I]n the laches context, “(1) delay is measured from the time at which the owner knew of an infringing use sufficient to require legal action; and (2) legal action is not required until there is a real likelihood of confusion.” See What-A-Burger of Virginia, Inc. v. Whataburger, Inc. of Corpus Christi, Texas, 357 F.3d 441, 451 (4th Cir. 2004).
The mark at issue in Ray Communications is AGRINET for “educational services rendered through the medium of radio; namely, a program of interest to farmers.” The the defendant used similar marks such as “OKLAHOMA AGRINET” for agricultural news programming on the air and in marketing. The defendant had been using the potentially infringing marks for many years – plaintiff filed its case in 2008, but the use of the defendant commenced in the late 70’s and early 80’s – about 20 years prior to the filing date of the complaint.
While this case reversed the district court’s decision in favor of the defendant – largely because the record was not developed adequately to establish such relief, the case demonstrates the complexity of determining when and how to enforce a trademark. For example, there was evidence that the defendant had changed certain marks, and that it had used some of the marks under license from the plaintiff – facts not considered in the lower court.
Trademark enforcement is important to maintain the trademark strength, but the failure to enforce it in some cases, will not prevent later enforcement as the infringement looms large.
For more information, contact Mike Oliver or Kimberly Grimsley.
by Mike Oliver | May 1, 2013 | Intellectual Property, LegalEase, Trademarks, Uncategorized
Section 1125(c)(1) of Title 15 (link here) provides as follows: “Subject to the principles of equity, the owner of a famous mark that is distinctive, inherently or through acquired distinctiveness, shall be entitled to an injunction against another person who, at any time after the owner’s mark has become famous, commences use of a mark or trade name in commerce that is likely to cause dilution by blurring or dilution by tarnishment of the famous mark, regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury.”
Current law however also provided that a ownership of a valid registered mark was a complete bar to an action under state law, seeking a similar dilution remedy. 15 USC 1125(c)(6). The law, however, was inartfully worded such that it could be and was read to bar even claims based on federal law.
This “error” in the statute was corrected in 112 HR 6215 (https://docs.house.gov/billsthisweek/20120910/BILLS-112hr6215-SUS.pdf ) by making it clear that ownership of a federal registration is not a bar to an action for dilution under federal law. Though this is a “technical” change, the old law applies prior to the date this law came into effect, and at least one tribunal has read the old law literally, barring a claim for dilution against a federal trademark holder.
For more information, contact Mike Oliver or Kimberly Grimsley.
by Mike Oliver | May 1, 2013 | Advertising, Intellectual Property, Trademarks, Uncategorized
Not so fast, says the 4th Circuit. Many lawyers and bloggers had assumed Google would win its case in which Rosetta Stone alleged that Google was contributing to the infringement of Rosetta Stone’s trademarks . . . but Google mostly lost on appeal.
The Rosetta Stone case involves use of “adwords” – Google adwords are purchased and give the user the right to place sponsored advertising on the front page and other pages, when a user searches for the term that was purchased. If the term is a trademark, often the advertising links to sites that are either not authorized to sell the goods, sell infringing goods, or sell competing goods.
In Rosetta Stone, Ltd. v Google, the 4th Circuit held that Rosetta Stone’s claims for direct trademark infringement, contributory trademark infringement and dilution arising from Google’s adword program could proceed to trial.
On direct infringement, the Court “assume[d] […] that Google’s policy permitting advertisers to use Rosetta Stone’s marks as keywords in the AdWords program and to use Rosetta Stone’s marks in the text of advertisements constituted an unauthorized use “in commerce” and “in connection with the sale, offering for sale, distribution, or advertising of any goods or services.” That left only likelihood of confusion to be addressed. In reviewing the lower court decision, the 4th Circuit agree that not all of the 9 factors must be used, particularly where the competing use is nominative – that is, where the use actually identifies the trademark owners’ goods. So, it focused on three factors – intent, actual confusion, and sophistication of the consuming public.
Evidence was presented that showed that Google believed that allowing use of trademark Adwords might cause some confusion (based in part on Google’s change in policy that allowed trademarks also to be included in titles and on ads – something it did not permit until 2009), and this was enough to overcome the intent element weighing solely in favor of Google as the lower court had found.
On actual confusion, evidence was presented both anectodally – by consumers who were confused, and by survey evidence. Google itself had done internal confusion studies, that showed 94% of users who saw ads with trademark terms in them were confused at least once.
Finally on the sophistication of the consuming public element, the 4th Circuitheld that the lower court wrongfully rejected evidence of lack of sophistication based solely on price (the product is expensive) noting that “[t]he evidence also includes an internal Google study reflecting that even well-educated, seasoned Internet consumers are confused by the nature of Google’s sponsored links and are sometimes even unaware that sponsored links are, in actuality, advertisements.”
Hence, after rejecting other defenses such as the functionality defense, the direct infringement claim was permitted to go to trial.
On the claim of contributory infringement, Google lost because evidence was presented that Rosetta Stone notified Google that known infringers were purchasing adwords for sponsored links – however, Google never terminated such users.
Finally, Google lost on the dilution claim, largely because the lower court had applied a defense (the defense that the defendant must have used the mark on its own goods and service and such use must have been fair), as an affirmative element of the claim. If anything on this point, which Google might win at trial, the case stands for the proposition that a plaintiff need not plead or prove the absence of statutory defenses, as a part of its claim.
If Google allows this to go to trial (unlikely) and loses, it could be subject to substantial damages, and worse, could open the door to many other claims by other trademark holders.
For our clients, this decision bolsters the ability to assert that Google might be directly and contributorily infringing a trademark when it allows adwords and advertising to be placed on its site that causes customer confusion. Not every use of a trademark term will do so, but if a trademark owner can obtain such information on confusion, this case would support at least a notice and demand to Google to cease such use. In addition, this case certainly supports an active trademark protection effort – to police misuse of trademarks and report them to Google (and any other search system provider) as the failure to remove such infringing content can constitute indirect contributory infringement.
For our clients that provide such portals and search services, this case essentially reinforces what our advice has been all along – that you must build into the system a means to remove allegedly infringing content upon notice. While there is no equivalent DMCA protection for trademarks, the failure to remove infringing content after notice can lead to a lawsuit like this.
For more information, contact Mike Oliver.
